Orinoco Iron, C.A. v Iron Carbide Holdings Limited

[2004] APO 30

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 725744 in the name of ORINOCO IRON, C.A.

Title:          Fluidized Bed Process for the Production of Iron Carbide

Action:          Opposition by IRON CARBIDE HOLDINGS under section 59 of the Patents Act 1990

Decision:          Issued 25 November 2004.

Abstract

The opponent raised grounds of novelty, inventive step, and section 40/fair basis, which matters were also pursued at the hearing.  By virtue of an amended statement of grounds and particulars allowed on 25 August 2004 the ground of lack of utility was included (as permitted by regulation 5.9A which came into force on 16 August 2004).

The invention is a process for the production of iron carbide particles which involved reduction and carburization of iron ore particles in different zones within the same reactor with a separate supply of reducing gas to the reactor and a separate supply of carburizing gas to the carburizing zone within the reactor.  Under section 40 issues of fair basis, lack of clarity and sufficiency were raised.  In particular the opponent claimed that several essential features were omitted from the claims.  After a proper construction of the specification and claims and review of the evidence, the opposed application was found to comply with the requirements of section 40.  In the matter of utility the opponent was unable to establish that the claims were deficient.  Further, no laboratory/pilot plant results were provided to show that the invention did not provide the results claimed.

Two citations were raised against novelty (and inventive step) but none of them disclosed the combination of features which required that reduction and carburization be carried out in separate zones within the same reactor and with separate gas feeds.  The opposed invention was also found not to be lacking an inventive step in light of either one of the citations when considered individually or when combined with the common general knowledge.

As the opponent was unsuccessful on all grounds, costs were awarded in accordance with Schedule 8 against the opponent Iron Carbide Holdings Ltd and in favour of the applicant Orinoco Iron, C.A.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 725744 by ORINOCO IRON, C.A. and an opposition under section 59 of the Patents Act 1990 by IRON CARBIDE HOLDINGS LIMITED.

BACKGROUND

1. Orinoco Iron, C.A. (henceforth Orinoco) filed patent application No. 725744 on 23 March 1999.  The application claims convention priority from US 09/055859 filed in the United States of America on 6 April 1998.  The application was examined and advertised accepted on 19 October 2000.

2. Iron Carbide Holdings Limited (henceforth ICH) filed a notice of opposition on 19 January 2001.  A statement of grounds and particulars was filed on 19 April 2001.  The service of evidence in support, evidence in answer, evidence in reply and further evidence was completed on 23 July 2004.

3. A hearing to deal with the substantive opposition was held in Perth on 6 August…